Articles Posted in Trademark

by
Around 1959, the company started doing business as Omaha Steaks. It has multiple trademark registrations that include the words “Omaha Steaks" and spent over $50 million in 2012 and 2013, on domestic advertising of its beef products through national radio, television, and freestanding print campaigns. It has been featured in national newspapers, magazines, television shows, and movies. It promotes its products via catalog and direct mail, a daily blast email, customer calls, and on social media. Omaha Steaks has 75 stores and two airport kiosks and sells via Amazon. In 1920, Greater Omaha Packing Company was formed; it sells boxed beef to wholesalers, such as hotels, restaurants, and food service institutions and has sold beef to Omaha Steaks since 1966. GOP sought to register the mark “GREATER OMAHA PROVIDING THE HIGHEST QUALITY BEEF” with a design for: “meat, including boxed beef primal cuts.” The Trademark Trial and Appeal Board dismissed Omaha Steak’s opposition, finding no likelihood of confusion between the opposed mark and Omaha Steaks’ registered trademarks. The Federal Circuit vacated. The Board’s fact-findings confirm that due to Omaha Steaks’ sales and marketing, the consuming public has been regularly exposed to its marks on a nationwide scale; the Board’s conclusion that Omaha Steaks did not provide any context for its “raw” sales figures and ad expenditures lacks substantial evidence. The Board’s findings regarding third-party use improperly relied on marks found on dissimilar goods not directed to the relevant public. View "Omaha Steaks International, Inc. v. Greater Omaha Packing Co." on Justia Law

by
The 753 trademark, issued to Converse in 2013, describes the trade-dress configuration of three design elements on the midsole of Converse’s All Star shoes. Converse filed a complaint with the International Trade Commission (ITC), alleging violations of 19 U.S.C. 337 by various companies in the importation into the U.S., the sale for importation, and the sale within the U.S. after importation of shoes that infringe its trademark. The ITC found the registered mark invalid and that Converse could not establish the existence of common-law trademark rights, but nonetheless stated that various accused products would have infringed Converse’s mark if valid. The Federal Circuit vacated. The ITC erred in failing to distinguish between alleged infringers who began infringing before Converse obtained its trademark registration and those who began afterward. With respect to the pre-registration period, Converse, as the party asserting trade-dress protection, must establish that its mark had acquired secondary meaning before the first infringing use by each alleged infringer. In addition, the ITC applied the wrong legal standard in its determination of secondary meaning. On remand, the ITC should reassess the accused products to determine whether they are substantially similar to the mark in the infringement analysis. View "Converse, Inc. v. International Trade Commission" on Justia Law

by
Real Foods sought registration of two marks: “CORN THINS,” for “crispbread slices predominantly of corn, namely popped corn cakes”; and “RICE THINS,” for “crispbread slices primarily made of rice, namely rice cakes.” Frito-Lay opposed the registrations, arguing that the proposed marks should be refused as either generic or descriptive without having acquired distinctiveness. The U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board refused registration of the applied-for marks, finding the marks “are merely descriptive and have not acquired distinctiveness,” dismissing Frito-Lay’s “genericness claim. The Federal Circuit affirmed. Substantial evidence supports the finding that the proposed marks are highly descriptive. The terms “corn” and “rice,” both of which are grains, describe the primary ingredient in Real Foods’ respective goods; the term thins describes physical characteristics of the corn and rice cakes. Viewing the marks as composites does not create a different impression. Real Foods “has not demonstrated that its applied-for marks have acquired distinctiveness. Real Foods did not demonstrate that its applied-for marks have acquired distinctiveness. The court remanded in part, finding that the Board erred in its analysis of genericness. View "Real Foods Pty Ltd. v. Frito-Lay North America, Inc." on Justia Law

by
DACo, a sports specialty shop, sells souvenirs and apparel associated with Detroit professional sports teams. Since at least 2004, DACo has used the DETROIT ATHLETIC CO. mark in connection with its retail services. In 2015, DACo sought to register the standard character mark DETROIT ATHLETIC CO. on the Principal Register for “[o]n-line retail consignment stores featuring sports team related clothing and apparel; [r]etail apparel stores; [r]etail shops featuring sports team related clothing and apparel; [r]etail sports team related clothing and apparel stores.” In response to a non-final refusal, DACo disclaimed ATHLETIC CO. and amended to seek registration on the Supplemental Register. The examining attorney refused registration under the Lanham Act, 15 U.S.C. 1052(d), finding that DETROIT ATHLETIC CO. is likely to be confused with DETROIT ATHLETIC CLUB, which is on the Principal Register for “[c]lothing, namely athletic uniforms, coats, golf shirts, gym suits, hats, jackets, sweatpants, sweatshirts, polo shirts, and T-shirts,” and is owned by the Detroit Athletic Club, a private social club organized in 1887. The Federal Circuit affirmed. The Board balanced the DuPont factors; substantial evidence supports its finding that, “because the marks are similar, the goods and services are related, and the channels of trade and consumers overlap, . . . confusion is likely between Applicant’s mark DETROIT ATHLETIC CO. and the mark DETROIT ATHLETIC CLUB.” View "In re: Detroit Athletic Co." on Justia Law

by
Diamond Hong petitioned for cancellation of Cai’s mark, “WU DANG TAI CHI GREEN TEA,” based on a likelihood of confusion with its registered TAI CHI mark. The U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB) found a likelihood of confusion, giving limited consideration to Cai’s briefing because it contravened provisions of the Trademark Trial and Appeal Board Manual of Procedure (TBMP). The Federal Circuit affirmed the cancellation of Cai’s mark under 15 U.S.C. 1052(d). The TBMP states that the TTAB is not required to permit “a party in the position of defendant” to file a reply brief. Diamond Hong initiated the cancellation proceedings by filing a petition;Cai was in the position of a defendant and was not entitled to file a reply brief. In its likelihood of confusion analysis, the TTAB considered the first three "DuPont factors," treating the rest as neutral because neither party submitted evidence related to them. Substantial evidence supports the TTAB’s findings with respect to each DuPont factor: the similarity of the nature of the goods, the similarity of established trade channels, and the similarity of the marks. View "Zheng Cai v. Diamond Hong, Inc." on Justia Law

by
Royal Crown (RC) and The Coca-Cola Company (TCCC) compete in the beverage market. Both companies and others distribute beverages that use ZERO as an element of their marks. When RC sought trademark protection for DIET RITE PURE ZERO and PURE ZERO, it disclaimed the term ZERO apart from the marks as a whole. TCCC has used ZERO as an element in its marks for at least 12 different beverage products sold in the U.S. The Patent and Trademark Office requested that TCCC disclaim the term “zero” because the term merely “describes a feature of the applicant’s goods, namely, calorie or carbohydrate content of the goods.” TCCC responded that the term had acquired distinctiveness under the Lanham Act, 15 U.S.C. 1052(f). The PTO accepted TCCC’s Section 2(f) submissions and approved the marks for publication without requiring disclaimers. The Board concluded that RC failed to demonstrate that ZERO is generic for the genus of goods identified in TCC's applications; that survey evidence indicated that TCCC’s ZERO marks had acquired distinctiveness; and that TCCC’s use of ZERO in connection with soft drinks was substantially exclusive, given the “magnitude of TCCC’s use.” The Board dismissed RC’s oppositions. The Federal Circuit vacated. The Board erred in its legal framing of the question of the claimed genericness of TCCC’s marks, and failed to determine whether, if not generic, the marks were at least highly descriptive. View "Royal Crown Co., Inc.. v. The Coca-Cola Co." on Justia Law

by
Brunetti owns the clothing brand “fuct.” In 2011, individuals filed an intent-to-use application for the mark FUCT for items of apparel. The applicants assigned the application to Brunetti, who amended it to allege use of the mark. The examining attorney refused to register the mark under the Lanham Act, 15 U.S.C. 1052(a), finding it comprised immoral or scandalous matter because FUCT is the past tense of “fuck,” a vulgar word, and is therefore scandalous. The Trademark Trial and Appeal Board affirmed. The Federal Circuit reversed. While substantial evidence supports the Board’s findings and it did not err concluding the mark comprises immoral or scandalous matter, section 2(a)’s bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech. The bar is a content-based restriction on speech; trademark registration is not a government subsidy program that could justify such a bar. Nor is trademark registration a “limited public forum,” in which the government can more freely restrict speech. The bar survives neither strict nor intermediate scrutiny. Even if the government had a substantial interest in protecting the public from scandalous or immoral marks, the regulation does not directly advance that interest because section 2(a) does not directly prevent applicants from using their marks. View "In re: Brunetti" on Justia Law

by
Lottery, a state agency, began operating traditional lottery drawing games and instant lottery scratch-off games in North Carolina in 2006. It introduces new scratch-off games on the first Tuesday of each month and asserts that it has continuously used the mark FIRST TUESDAY since July 2013 in print materials, on its Website, and on point-of-sale displays. In 2014, Lottery applied for registration of the mark FIRST TUESDAY for “Lottery cards; scratch cards for playing lottery games” and for “Lottery services,” submitting specimens that have explanatory text such as “[n]ew scratch-offs” or “[n]ew scratch-offs the first Tuesday of every month.” The examining attorney refused registration, finding that the mark used in the context of Lottery’s promotional materials “merely describes a feature of [its] goods and services, namely, new versions of the goods and services are offered the first Tuesday of every month.” The Trademark Trial and Appeal Board and the Federal Circuit affirmed. Lottery’s promotional materials make clear that “new scratch-off games are offered on the first Tuesday of every month” and that fact would “be so understood by the relevant consumers who encounter the designation FIRST TUESDAY.” No “mental thought or multi-step reasoning is required to reach a conclusion as to the nature of the involved goods and services.” View "In re: North Carolina Lottery" on Justia Law

by
Symbolic owns the mark I AM (typed drawing) for “clothing, namely, hats, caps, socks, shirts, t-shirts, sweatshirts, tank tops, shorts, pants, sweatpants, jeans, swimwear, swimsuits, beachwear and footwear, namely, shoes, athletic footwear, boots, clogs, sneakers and sandals” in class 25, and owns the mark WILL.I.AM (standard characters) for certain goods in class 9 and services in class 41. Symbolic’s predecessor-in-interest (William Adams) filed trademark applications for registration of the mark for goods in classes 3, 9, and 14 on an intent-to-use basis under 15 U.S.C. 1051(b). The applications were amended during prosecution to include the statement “associated with William Adams, professionally known as ‘will.i.am.’” The examining attorney refused registration on the ground of likelihood of confusion with previously registered I AM marks pursuant to 15 U.S.C. 1052(d) for the same or similar goods. The Board affirmed, noting that Adams is the well-known front man for the music group The Black Eyed Peas and is known as will.i.am but that the record did not establish that Adams is “widely known by ‘i.am’ or that ‘i.am’ and ‘will.i.am’ are used interchangeably by either Mr. Adams or the public.” The Federal Circuit affirmed, upholding the “likelihood of confusion” finding. View "In re: I.AM.Symbolic, LLC" on Justia Law

by
Kerry is the CEO of KEI, the son of Dale Earnhardt (a professional race car driver who died in 2001), and the stepson of Teresa. KEI's ventures include the EARNHARDT COLLECTION lifestyle brand. KEI licensed that mark to Schumacher for use in connection with custom home design and construction. Teresa, Dale's widow, owns trademark registrations and common law rights containing the mark DALE EARNHARDT in connection with various goods and services and has sold licensed merchandise totaling millions of dollars since 2001. Teresa filed notices of opposition to KEI's trademark application. The Trademark Board found that Teresa did not establish a likelihood of confusion and that EARNHARDT COLLECTION is not primarily merely a surname, 15 U.S.C. 1052(e)(4). The Board found that “collection” is “not the common descriptive or generic name” for KEI’s goods and services. The Federal Circuit vacated. The Board's decision could be understood as finding that “collection” is neither generic nor merely descriptive of KEI’s goods and services, and adding “collection” to “Earnhardt” alters the surname significance of Earnhardt in the mark as a whole; it could be understood as finding that a mark consisting of a surname and a merely descriptive term is registrable as a matter of law if the descriptive term is not generic. View "Earnhardt v. Kerry Earnhardt, Inc." on Justia Law